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Rock Band Wins First Amendment Appeal Over "Disparaging" Trademarks

Slants frontman Simon Tam has scored a big victory at a federal appeals court in his challenge to the U.S. Patent & Trademark Office's refusal of a trademark registration.

On Tuesday, the United States Court of Appeals for the Federal Circuit accepted Tam's contention that the USPTO's "Slants" refusal, done pursuant to a law against "scandalous, immoral or disparaging marks," constitutes a violation of First Amendment rights. The decision provides massive encouragement to those such as the Washington Redskins, who are fighting on similar grounds. In fact, unless the U.S. Supreme Court decides to weigh in, it seems likely that the USPTO's decision to cancel the registration of the "Washington Redskins" will also not survive constitutional scrutiny. (The Redskins are fighting in a different appellate circuit, where Tuesday's ruling isn't binding.)

In attempting to register "The Slants," Tam, an Asian-American, said he was attempting to "take ownership" of Asian stereotypes. After the USPTO refused to register, he went to an appeals court and was handed a loss, thanks to a prior 1981 appellate ruling in McGinley that held that "the PTO's refusal to register appellant's mark does not affect his right to use it."

Tam was then successful in bringing the dispute for review en banc, before a wider panel of appellate judges at the Federal Circuit.

Federal Circuit Judge Kimberly Ann Moore, who authored the prior ruling but had some reservations, came to a new conclusion on Tuesday.

"It is a bedrock principle underlying the First Amendment that the government may not penalize private speech merely because it disapproves of the message it conveys," she writes. "That principle governs even when the government’s message-discriminatory penalty is less than a prohibition."

Moore continues by saying that words are powerful, and the courts have been slow to appreciate how trademarks fit in. The analysis is also informed by appreciation that trademarks have gone beyond commercial endeavors to attach themselves to expressive speech. The opinion is as much affirmation of the importance of trademark rights as anything else, though the decision to see a government viewpoint in such routine matters as acceptance or denial of a trademark registration is something that could come up again in other contexts.

"The government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks," she writes. "It cannot refuse to register marks because it concludes that such marks will be disparaging to others. The government regulation at issue amounts to viewpoint discrimination, and under the strict scrutiny review appropriate for government regulation of message or viewpoint, we conclude that the disparagement proscription of § 2(a) is unconstitutional. Because the government has offered no legitimate interests justifying § 2(a), we conclude that it would also be unconstitutional under the intermediate scrutiny traditionally applied to regulation of the commercial aspects of speech."

The appellate judge does write in a footnote that the holding is limited to the constitutionality of the disparagement provision in the Lanham Act and might not touch on the immoral or scandalous provisions. As such, the USPTO can continue to defend refusals on other marks — including the Redskins — and future courts will have to decide whether to apply Tuesday's ruling more broadly.

The case drew friend-of-the-court briefs from many, including the ACLU and a coalition of adult-film producers. Tam was represented by attorney Ron Coleman.

For example, Judge Alan Lourie wrote that after 70 years, there was no reason to change settled law and that the conclusions of McGinley were still appropriate today.

"The refusal of the USPTO to register a trademark is not a denial of an applicant’s right of free speech," he stated. "The markholder may still generally use the mark as it wishes; without federal registration, it simply lacks access to certain federal statutory enforcement mechanisms for excluding others from confusingly similar uses of the mark. Mr. Tam may use his trademark as he likes, whether it be encouraging discussion on or taking ownership of racial slurs, or identifying goods and services with his band. In fact, it seems quite likely that Mr. Tam will continue to use his band name to make a statement regardless of federal registration — the expressive purpose of his mark undoubtedly overshadows the commercial considerations."